Offc Action Outgoing

Deadline for responding. The USPTO must receive applicant’s response within six months of the “date on which the notification was sent to WIPO (mailing date)” located on the WIPO cover letter, or the U.S. application will be abandoned. To confirm the mailing date, go to the USPTO’s Trademark Status and Document Retrieval (TSDR) database, select “US Serial, Registration, or Reference No.,” enter the U.S. application serial number in the blank text box, and click on “Documents.” The mailing date used to calculate the response deadline is the “Create/Mail Date” of the “IB-1rst Refusal Note.”

Respond to this Office action using the USPTO’s Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.

Discussion of provisional full refusal. This is a provisional full refusal of the request for extension of protection to the United States of the international registration, known in the United States as a U.S. application based on Trademark Act Section 66(a). See 15 U.S.C. §§1141f(a), 1141h(c).

The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

Search of Office’s Database of Marks

The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d). 15 U.S.C. §1052(d); TMEP §704.02.

Summary of Issues:

Amended identification of goods required (only as to the goods specified below);
Amended mark description required; and
U.S.-licensed attorney required.

Amended Identification of Goods Required

The stated requirement refers only to the goods specified below and does not bar registration for the other goods identified in the application.

The classification and identification of goods in the application are:

Class 016: Decorative stickers for motorcycles; stickers; decalcomanias for motorcycles; decalcomanias; seals [stationery]; paper labels; emblem printed seals, stickers and paper labels; photograph stands; industrial packaging containers of paper; printed matter; stationery

The wording that is underlined in the identification of goods. Above, is indefinite and must be clarified to specify the nature of the printed matter. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. The wording must also be amended to remove the brackets and incorporate the bracketed information into the amended identification. Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods and/or services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and/or services not claimed. See TMEP §1402.12.

Applicant may adopt any or all of the following identification, if accurate. In the following, proposed amendments are in bold.

Class 016: Decorative stickers for motorcycles; stickers; decalcomanias for motorcycles; decalcomanias; seals in the nature of stationery; paper labels; emblem printed seals, stickers and paper labels; photograph stands; industrial packaging containers of paper; printed matter, namely, stickers; stationery

For assistance with identifying and classifying goods in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.

Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted goods may not later be reinserted. See TMEP §1402.07(e). Additionally, for applications filed under Trademark Act Section 66(a), the scope of the identification for purposes of permissible amendments is limited by the international class assigned by the International Bureau of the World Intellectual Property Organization (International Bureau); and the classification of goods may not be changed from that assigned by the International Bureau. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Further, in a multiple-class Section 66(a) application, classes may not be added or goods transferred from one existing class to another. 37 C.F.R. §2.85(d); TMEP §1401.03(d).

In addition to amending the identification, applicant may respond to the stated requirement by doing one of the following:

(1) Deleting the goods to which the requirement pertains; or

(2) Filing a Request to Divide Application form (form #3) to divide out the goods that have not been refused registration so that the mark may proceed toward publication for opposition for those goods to which the requirement does not pertain. See 37 C.F.R. §2.87. See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to this Office action. 37 C.F.R. §2.87(e).

Applicant must also respond to the following requirements.

Amended Mark Description Required

The description of the mark, set forth in the August 20, 2020 voluntary mark description, is:

The mark consists of the word “Kawasaki” with the letters in white on the left black portion of the oval background obliquely divided in half by its right portion in green color.

Applicant must submit an amended description of the mark because the current one is incomplete and does not describe all the significant aspects of the mark. 37 C.F.R. §2.37; see TMEP §§808.01, 808.02. In particular, the description does not reference the black outline surrounding the green portion of the oval. Descriptions must be accurate and identify all the literal and design elements in the mark. See 37 C.F.R. §2.37; TMEP §§808 et seq.

The following description is suggested, if accurate:

The mark consists of the wording “KAWASAKI” in a stylized font in the color white. The wording appears on the left portion of a black oval. The right portion of the interior of the oval, divided obliquely with the left side, is in the color green. The remainder of white in the drawing represents transparent background space.

Applicant must also respond to the following requirement.

U.S.-Licensed Attorney Required

An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory. 37 C.F.R. §§2.11(a), 11.14; Requirement of U.S.-Licensed Attorney for Foreign-Domiciled Trademark Applicants & Registrants, Examination Guide 4-19, at I.A. (Rev. Sept. 2019). A juristic entity’s domicile is the principal place of business; i.e., headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. Because applicant is foreign-domiciled, applicant must appoint such a U.S.-licensed attorney qualified to practice under 37 C.F.R. §11.14 as its representative before the application may proceed to registration. 37 C.F.R. §2.11(a). See Hiring a U.S.-licensed trademark attorney for more information.

Only a U.S.-licensed attorney can take action on an application on behalf of a foreign-domiciled applicant. 37 C.F.R. §2.11(a). Accordingly, the USPTO will not communicate further with applicant about the application beyond this Office action or permit applicant to make future submissions in this application. And applicant is not authorized to make amendments to the application.

To appoint an attorney, applicant should submit a completed Trademark Electronic Application System (TEAS) Change Address or Representation form. The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form indicating that an appointment of attorney has been made and address all other refusals or requirements in this action, if any. Alternatively, if applicant retains an attorney before filing the response, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney. See 37 C.F.R. §2.17(b)(1)(ii).

Response to Office Action Required to Avoid Abandonment

For this application to proceed, applicant must explicitly address each requirement in this Office action. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

How to respond. Click to file a response to this nonfinal Office action.

Jeanine Gagliardi

/Jeanine Gagliardi/

Examining Attorney

Law Office 120

571-272-3177

jeanine.gagliardi@uspto.gov

RESPONSE GUIDANCE

Missing the response deadline to this letter will cause the application to abandon. A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period. TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.

Responses signed by an unauthorized party are not accepted and can cause the application to abandon. If applicant has an attorney, the response must be signed by the attorney.

If needed, find contact information for the supervisor of the office or unit listed in the signature block.